SnapTrack, Inc.

Trademark Trial and Appeal Board

Jan 25, 2001

No. 75472972 (T.T.A.B. Jan. 25, 2001)

1/25/01 Paper No. 12
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re SnapTrack, Inc.
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Serial No. 75/472,972
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Lori N. Boatright of Blakely, Sokoloff, Taylor & Zafman for
SnapTrack, Inc.
Ronald E. Aikens, Trademark Examining Attorney, Law Office
103 (Michael Szoke, Managing Attorney).
_______
Before Hohein, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
An application has been filed by SnapTrack, Inc. to
register on the Principal Register the mark LOCATION ON
DEMAND1 for “global positioning computer system hardware and
software for identifying the position and uses of a
telecommunication device” in International Class 9, and
“communications and telecommunications services using
global positioning systems to provide navigation,
1 Application Serial No. 75/472,972, filed April 23, 1998, in
which applicant alleges a bona fide intention to use the mark in
commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/472972
2
positioning, and tracking for a user of a
telecommunications device” in International Class 38.2
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
ground that applicant’s mark, if used in connection with
applicant’s goods and services, is merely descriptive of
them. The Examining Attorney also made final the
requirement for a more definite identification of both the
goods and the services.3
Applicant has appealed, and applicant and the
Examining Attorney have briefed the issues before us. An
oral hearing was not requested.
Turning first to the question of the identifications
of goods and services, the Examining Attorney did not
accept the original identifications of goods and services,
and he offered suggested identifications for applicant’s
goods and services. In response, applicant amended the
identifications of goods and services to that set forth
above. Applicant’s amendment to the identifications has
been rejected by the Examining Attorney as indefinite.
2 The acceptability of the identifications of goods and services
is an issue in this appeal and will be fully addressed later in
this decision.
3 There is no indication in this record that the Examining
Attorney consulted the Administrator for Trademark Classification
and Practice, or that a copy of the final Office action was
referred to that Administrator pursuant to TMEP §804.06.
Ser. No. 75/472972
3
The Examining Attorney contends that the term
“software” in the identification of goods and the words
“communications and telecommunications services using
global positioning systems...” in the identification
services render the identifications indefinite.
Specifically, the Examining Attorney contends that
applicant has not identified the nature of the software
components with enough specificity in its identification of
goods; and that the identification of services is unclear
as to whether applicant’s services utilize a global
positioning system to provide navigation and tracking or
whether applicant provides a navigation and tracking
service.
Applicant contends that both the identifications of
goods and services meet the criteria of the “USPTO ID
Manual” for making clear the nature of the involved goods
and services.
Section 1(b)(2) of the Trademark Act, 15 U.S.C.
§1051(b)(2), requires that the written application specify
the goods or services in connection with which applicant
intends to use the mark. Trademark Rule 2.32(a)(6)
requires, in relevant part, that a trademark application
must set forth “the particular goods or services” with
which applicant uses or intends to use the mark. Further,
Ser. No. 75/472972
4
the identification of goods or services must be specific
and definite. See TMEP §§804.01, and 1301.05. The TMEP
also sets forth the guidelines which the Examining Attorney
should consider in determining the appropriateness of any
identification of goods or services.
Upon careful review of the information of record, we
find that applicant’s identifications of goods and
services, while perhaps not as specific as the
identifications suggested by the Examining Attorney,
nonetheless sufficiently define both the goods on which and
the services in connection with which applicant intends to
use its mark. Thus, the refusals to register in the
absence of further specification of the identifications of
goods and services were improper.
Turning to the issue of descriptiveness, the Examining
Attorney contends that the mark LOCATION ON DEMAND merely
describes the purpose and function of applicant’s
identified goods and services involving global positioning
system hardware and software communications and
telecommunications services using global positioning
systems. The Examining Attorney specifically argues as
follows:
The plain definitions of the terms
clearly indicate the functions and
characteristics of the goods and
Ser. No. 75/472972
5
services – to supply a consumer with
information as to their location when
needed or asked for. In other words,
the applicant’s goods and services are
designed to provide a consumer with
their location on demand. (Emphasis in
original.) (Final Office action, p.
2); and
The meaning of the mark can be
understood from the individual meanings
of its elements – the plain meaning of
“LOCATION ON DEMAND” is that one asks
to be informed of the place where
something is or could be located. The
combination of the words does not have
a different meaning from those of the
individual words. (Brief, p. 9.)
In support of the descriptiveness refusal, the
Examining Attorney has made of record the following
definitions from The American Heritage Dictionary (1992):
(1) “location” is defined as “2. A
place where something is or could
be located; a site”; and
(2) “demand” is defined as “3. To ask
to be informed of: I demand a
reason for this interruption,” and
it includes a further definition
of “—idiom. on demand 2. When
needed or asked for: fed the baby
on demand.”
Applicant argues that the mark LOCATION ON DEMAND is
not a common descriptive name of the goods or services and
does not have a clear meaning; that the mark is “nebulous”
in meaning and thus, is only suggestive of the goods and
services; that because the “on demand” portion of the mark
Ser. No. 75/472972
6
is idiomatic, it is, by definition,4 peculiar to the
language, and when the word “location” is added, the mark
creates a unique combination of words; that the Examining
Attorney has not provided any evidence of the mark actually
used by others in connection with any such goods or
services; and that doubt on the issue of descriptiveness
must be resolved in favor of applicant.
The test for determining whether a mark is merely
descriptive is whether the term immediately conveys
information concerning a significant quality,
characteristic, function, ingredient, attribute or feature
of the product or service in connection with which it is
used, or intended to be used. See In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); and In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). Further, it
is well-established that the determination of mere
descriptiveness must be made not in the abstract or on the
basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the term or phrase is being used on or in connection
4 Applicant requested in its brief that the Board take judicial
notice of the following definition of the term “idiom” from The
American Heritage College Dictionary (1997): “a speech form or an
expression of a given language that is peculiar to itself
grammatically or cannot be understood from the individual
meanings of its elements.” Applicant’s request is granted. See
TBMP §712.
Ser. No. 75/472972
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with those goods or services, and the impact that it is
likely to make on the average purchaser of such goods or
services. See In re Consolidated Cigar Co., 35 USPQ2d 1290
(TTAB 1995); and In re Pennzoil Products Co., 20 USPQ2d
1753 (TTAB 1991). Consequently, “[w]hether consumers could
guess what the product [or service] is from consideration
of the mark alone is not the test.” In re American
Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). Rather,
the question is whether someone who knows what the goods or
services are will understand the mark to convey information
about them. See In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990).
We agree with the Examining Attorney that applicant’s
mark immediately and directly conveys information about a
significant purpose and function of applicant’s goods,
i.e., that, when needed or asked for, applicant’s global
positioning system computer hardware and software
identifies something’s position or location, and the
communications and telecommunications services using global
positioning systems provide positioning or location
information.
The ordinary, commonly understood meaning of the words
LOCATION ON DEMAND, considered as a whole, and in the
context of applicant’s goods and services (involving global
Ser. No. 75/472972
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positioning systems) immediately informs prospective
purchasers that applicant’s goods and services are intended
as a product and a service to assist, as needed or when
asked, in identifying and/or tracking a position
(location). Thus, when the mark LOCATION ON DEMAND is
viewed in the context of applicant’s goods and services,
the purchasing public would immediately understand the
nature and purpose of the goods. See In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Omaha
National Corporation, 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987); In re Intelligent Instrumentation Inc., 40
USPQ2d 1792 (TTAB 1996); and In re Time Solutions, Inc., 33
USPQ2d 1156 (TTAB 1994).
Applicant’s mark is not incongruous, creates no double
meaning, and requires no imagination or thought in order to
ascertain its meaning in relationship to applicant’s
identified goods and services. The fact that a part of the
mark (“on demand”) is idiomatic in the English language
serves to heighten the commonly understood meaning of the
mark in the context of applicant’s goods and services.
Purchasers would immediately understand that these goods
and services involve the act or process of locating
something or someone when the consumer requests the
information.
Ser. No. 75/472972
9
Applicant’s argument that there is no evidence of
other users of these words is not persuasive. In order to
show that that a mark is merely descriptive, it is not
necessary to show that others are using it. It is well
established that a term may be merely descriptive even if
applicant is the first or is the only entity currently
using it. See In re Tekdyne Inc., 33 USPQ2d 1949, 1953
(TTAB 1994); and Pennzoil Products, supra at 1756.
Decision: The refusal based on the requirement for an
acceptable identification of goods and services is
reversed. The refusal to register on the ground that the
mark is merely descriptive under Section 2(e)(1) is
affirmed.